Section 101 Report from the USPTO

The USPTO’s new Section 101 Report [101-Report] is fairly bland, and primarily reports that most of the public input favored a legislative change that would expand patent eligibility to include many of the life-science and software innovations excluded under Mayo/Alice.

On his Director’s Blog, Joseph Matal writes:

Commenters confirmed that the recent Supreme Court cases have significantly changed the standards for determining patent subject matter eligibility. . . . A diverse group of representatives from academia, industry, law firms, and legal associations proposed legislative changes aimed at reversing the recent trend in the law and restoring, in their view, a more appropriate dividing line between eligible and ineligible subject matter. In contrast, a sizable portion of representatives from the software industry argued that the Court’s two-step test provides an appropriate standard for patent subject matter eligibility. This group cautioned against legislative redress and instead recommended that the common law should be allowed to evolve. . . . A healthy patent system that fuels research and development of innovative technologies is a critical component of our nation’s robust system of IP rights. Given the link between a healthy patent system and our nation’s economy, the contours of patent subject matter eligibility are of great concern to the USPTO and the IP community.

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82 thoughts on “Section 101 Report from the USPTO”

Processing data takes time, energy, and space. The conservation of information is the most important law in physics.

Machines that process information (like our brains) should be patent eligible. This whole debate is based on people creating new abstractions that have no meaning in the context of science and technology.

My posting just got refused by the filter. So I will try again, with two small changes. Here goes.

At 421111 below, Paul Cole writes:
“An image is made with light. If it is of a face, you can look at it and recognise it.
Data is numbers. Even if the numbers encode a face, you cannot see it or recognise the face just from the numbers. You need physical apparatus to convert the numbers to an image.
There is a difference which should be perceptible to an xxxxx, or even a judge.”
The difference is perceptible to me, and I think it helpful, indeed important, in the context of debates on eligibility for patenting.
Anybody else?

The “difference” is the “physical apparatus” that converts a digital signal (ineligible) to “images” (also ineligible).

The “physical” apparatus we are talking about is a programmable computer hooked up to a display. That apparatus is ancient technology and it exists to convert data for images.

What’s left? Logic. Also ineliglble.

But wait! Writing instructions for computers simply has to be eligible for patenting! Because some rich attorneys say so, even if most of the people doing the actual instruction writing think it’s a terrible idea and even if the PTO and the CAFC is completely incompetent when it comes to evaluating “new logic” over “old logic” and — for bizarre inexplicable reasons — performs that evaluation using legal tools created for physical compositions and processing.

By the way, how is the PTO doing with its effort to create a searchable organized database of algorithms and coding logic? Hasn’t even started? Oh, great.

“An image is made with light. If it is of a face, you can look at it and recognise it.
Data is numbers. Even if the numbers encode a face, you cannot see it or recognise the face just from the numbers. You need physical apparatus to convert the numbers to an image.
There is a difference which should be perceptible to an idiot, or even a judge.”

The difference is perceptible to me, and I think it helpful, indeed important, in the context of debates on eligibility for patenting.

The notion of “You need physical apparatus to convert the numbers to an image.” does not change what software is: a machine component, and – in the patent sense – an equivalent to the other machine “wares” of hardware or firmware.

Only those who purposefully want to blind themselves to the fact that software is solely made (manufactured, by the hand of man – again, fully in line with the patent concept of that term) to BE a machine component, only those people will be “confused” or rather more correctly, will seek to confuse.

I think it is not helpful to declare the absolute, that “If it is a process, it is eligible.” Not every process is eligible. It depends what the process does.

Neither do I think it helpful to declare another absolute, that “If it is a program for a computer, then it is a machine component and therefore it is in itself patent-eligible”. Not every program for a computer is eligible. It depends what the program does.

Pure mathematics is “useful” just as writing thrilling novels is useful, or composing a symphony. But that’s not the issue. What is decisive is that the useful arts do not include such human endeavours as pure math or literary work product or musical compositions or flower arranging.

Just for the record, and as I have commented before, any law student who when concentrating on interpretation of a statute ignored the substantive provisions of the section and instead considered only exceptions should not only fail the question but also be asked whether he or she really has the mental equipment for a career in the law.

Using the Mayo/Alice test without reference to the positive provisions of Section 101 and the case law related to those positive provisions falls within the category of error set out above. And as I have said elsewhere, if claimed subject matter falls as a matter of substance and not as a matter of mere outward form within one of the four categories, then it cannot be removed from eligibility by judicial exception without creating serious separation of powers issues. That was the “dynamite” question in Sequenom which unfortunately was not taken up by the Supreme Court.

I have long advocated the position that the law does not need changing, merely careful and correct application to the cases which come before the court, and without judicial re-writing of claims to overlook important claimed elements as in Recognicorp.

“the law does not need changing, merely careful and correct application to the cases which come before the court.”

I agree 100% with this sentiment, both in patent law, and all other areas of the law. But no congressman is going to run on a platform of “the laws are good, so let’s just sit around and watch the judiciary properly apply them.” No, congressmen feel the need to change and complicate and accumulate laws, not for the good of the country, but for their own good, consequences be danged.

So you have faith that every statue ever adopted is the best that could be done? Wut?

Meanwhile, when a statute is simply too indefinite to reliably interpret, what then?

For instance, the definition of the word process can mean virtually any activity in the world, including many that simply can’t be patentable subjects. All the careful and correct application in the world cannot change the fact that the outcome will be forum-specific because the word is inherently indefinite.

Les, the word “process” is no different from any other word, in that its meaning varies with context. It is wrong, futile and self-defeating to ascribe any particular meaning to a word, say “screw”, until you have identified the context in which it is being used, and then construed the word in view within the landscape set by the context.

Here, the context is the Congressional Act to implement the Patents Clause of the Constitution.

In that context, “process” is a reference to the useful arts.

All that Martin is asserting is that there exist many very useful processes, for example thought processes that can solve real life personal problems, which are not within the ambit of the expression “useful arts” found in the Patents Clause of the Constitution. Or do you say that thought processes are eligible under the Constitution for patenting in the USA?

“Because the only limitation on the plain meaning of “process” that the Court acknowledges explicitly is the bar on abstract ideas, laws of nature, and the like, it is presumably this limitation that is left to stand between all conceivable human activity and patent monopolies. But many processes that would make for absurd patents are not abstract ideas. Nor can the requirements of
novelty, nonobviousness, and particular description pick up the slack. Cf. ante, at 12–13 (plurality opinion). A great deal of human activity was at some time novel and nonobvious”.

There is considerable case law around the category “process” and it is not as straightforward as you suppose. The process has to bring about real world transformation, Cochrane v Deener if my memory serves. Unfortunately this important case law is now overlooked as a result of excitement over Alice.

Paul, Cochrane is the MOT. The government urged the Supreme Court to adopt the MOT in Benson. They failed to do it there, but applied it in Diehr. When the Federal Circuit got a right in Bilski, the Supreme Court put a kibosh on the test in Bilski.

If Congress really wanted to be bold, they would codify the MOT and specifically overrule Benson, Flook, Bilski and Alice.

You overstep there Paul, as the Court in Bilski (and Prometheus) does NOT agree with you. Note that these occurred prior to Alice.

As I have mentioned, you want to switch the focus to how the lower courts are applying what the Supreme Court has done and you continue to miss the point that what the Supreme Court has done itself IS the problem.

“merely careful and correct application to the cases which come before the court, and without judicial re-writing”

Too late.

The table has been set, and one simply cannot ignore the fact that the Court itself has not properly applied “interpretations,” and has instead (as correctly shared by Director Matal), engaged in common law writing.

It is too late to warn against creating serious separation of powers issues, as the Court has already created those serious separation of powers*** issues.

I have heard you speak many times that the problem is in how the lower courts are applying what the Supreme Court has done. While there may be problems with such applications, you continue to miss the point that the larger problem is with the Supreme Court cases themselves.

To the extent that you wish to NOT see (and address) the larger issue, your calls then are a hindrance, rather than a help to resolving that larger issue.

***among other issues, including but not limited to a Void for Vagueness concern given that they have refused to delineate what several factors in their “Gist/Abstract” sword common law writing includes.

If Recognicorp goes en banc, we might JUST get some limitation on judicial re-writing e.g. confusing an image on a display screen with mere data. It would be nice if we could have confidence in the Federal Circuit to (a) take the case en banc, (b) get the facts and the law straight, and (c) come to a correct and useful conclusion.

Well…..there is a human meaning too….unfortunately much of that meaning (i.e. value) is entirely different for every person.

There is the symbol itself, which has no outside meaning other than as a vehicle (pure data), then there is the agreed upon meaning (the objective description of the image) and then there is the iceberg of the utility of that meaning to a human being,where the patent system has no business being.

Vehicles should be patentable. Public meanings should be copyrightable. Private meanings? GTFO.

What is the difference between an image on a TV or IRL to your retina?

Likewise what is the difference between a photon bounced off an object or a photon released from an LED?

An image is three things: photons themselves (including media for generation and storage), any agreed upon social meaning (e.g. this is a house, that is a dog) and the personal experience of the image in the mind of a person.

Mr. Snyder, until you grasp the concept of the legal term of utility, your comments along the lines of “the iceberg of the utility of that meaning to a human being, where the patent system has no business being.” only shows how little you understand of that which you want to advocate upon.

then it cannot be removed from eligibility by judicial exception without creating serious separation of powers issues.

All they are doing is interpreting a statute to prevent the scheme from being unconstitutional. Far from being “a separation of powers issue” its the norm in all their interpretations. They assume Congress intended to act constitutionally and construe the statute as such. If Congress were to re-pass 101 and explicitly allow for, e.g. abstract ideas or natural laws with only token additions, the court would just declare the scheme unconstitutional because Congress’ patent power only extends to what promotes the sciences.

There’s no mechanism by which you can teach the public nothing and still get a patent, because Congress doesn’t have that power. If you have a preexisting method and implementing it in a new field of use presents no technical problem, the patent either has to be obvious or it has to be ineligible. What you can’t have is a re-monopolization of something previously dedicated to the public when no new teaching is presented.

Let me give you a simple analogy – right now nobody can live on Mars. If someone enables landing a person and living on Mars, that person can’t repatent everything that is done here on earth but doing it “on Mars” simply because there was no “on Mars” enablement (and thus was non-obvious) before. Unless the act requires some sort of new technological teaching growing out of the fact that Mars is a different environment than Earth, the patent would have the effect of 1) monopolizing the planet of mars because anything you could conventionally do on earth you would be prevented from doing there and 2) taking all of the acts previously dedicated to the public to use anywhere and re-apportioning it to a single individual. Those are not patent power acts.

The fact that the office has routinely allowed for “old thing in new field despite no new technical teaching required” is why Alice is such a huge issue right now.

Random, people want to read cases such as Darcy v. Allen, the so-called Case of Monopolies. One person in the kingdom have been given the right to import and sell playing cards regardless that they were not new. It was patents such as these that led to the Statute of Monopolies that sought to and granting of patents that did not bring new “trade” to England. Charles I ignored the statute, continue to grant monopoly patents to his friends, which eventually led to the English Civil War and his beheading.

Obviously, we cannot grant patents that do not bring new trade to America because we, in our patent laws and in our Constitution, limited patents to inventions and discoveries within the useful arts which can be read to patents and inventions that bring new manufactures to America.

So the question to me when considering a claimed invention is whether it actually is new, and whether it is arguably a manufacture of some kind, or a way of making something. Patents on trade that do not involve new technology, new things, new manufacturers, are what the Statute of Monopolies and the United States Constitution is all about.

“Obviously, we cannot grant patents that do not bring new trade to America because we, in our patent laws and in our Constitution, limited patents to inventions and discoveries within the useful arts which can be read to patents and inventions that bring new manufactures to America.”

Nobody thinks that abstract ideas or natural laws should be patentable, either in Europe or in the US.

If you plot the eligible categories and the judicial exceptions on a Venn diagram, as I have done for lectures in the US, there is no intersection between the two.

The problem comes when you broaden the exceptions to overlap the eligible categories and nibble away at them. Sequenom is one example, complying with the process category both in form and as a matter of substance, as I wrote in the CIPA amicus brief. Recognicorp is another.

The words “directed to” in the Alice test is part of the problem. A process for cooking an omlette starts with eggs. It ends with an egg product. But that does not mean that the cooking method is directed to eggs, even if that is where Judge Reyna’s logic would point us.

Great post and great Amicus Brief in Recognicorp. I have yet to see an official PTO position on the TRIPs issue (examiners are all over the place in Ex Parte appeals but that’s to be expected), and I would be very curious to see how the Federal Circuit would address it. It seems like a very clear issue under Charming Betsy. I’m keeping my fingers crossed for en banc review.

Overall, there seems to be something clearly wrong when a judicial exception that was solely justified by pre-emption concerns is so often applied without any discussion of pre-emption. This is particularly true with respect to abstract ideas, where it is easy to characterize almost anything as abstract, and rare to see actual discussion of how a claim is at risk of pre-empting use of a specifically identified abstract idea.

If the office actually applied written description you wouldn’t have software wanting the abstract idea exception so much because you wouldn’t have every claim be directed to overbroad functional results. Imagine how any other field would be if you routinely foreclosed the act of solving a problem because someone may or may not have found a single solution.

That being said, software is not the only place that this happens, and the eligibility test probably has to be as wide as it is.

PoIR is a gentlemen whose writing YOU have referenced (so your claim to not knowing him is more than a bit suspicious.

He is a gentlemen that tends towards the philosophical end of the math/applied math/Math(S) philosophy spectrum and has written extensively on how equations have WIDE equivalencies (based on math principles).

Readers may (or may not) be interested in knowing that THIS WAS THE SUM of a post that somehow was deemed “offensive” and was removed.

That removed post had ZERO malicious “bite” to it. It does however, reflect Random’s own linked support for a position that makes Random’s views unsustainable.

It is no doubt part of the problem of the ecosystem – and the perceptions of the OVER-editorial control and shaping of the desired messages to be had from conversations here – that this type of comment was removed. I can see no valid reason for its removal – because there is NO valid reason for its removal.

The problem is I see it is that the Supreme Court in Benson and Bilski were asked whether mathematical algorithms claimed as part of a computer system, in the case of Benson, or business methods in the case of Bilski, presented subject matter that constituted a process within 101. But instead of answering the questions presented in either case, the court declared in Benson that mathematical algorithms are ideas, and in Bilski that “business methods” were abstract. Of course, ideas and abstractions were historically determined not to be patentable as such because of considerations that are better addressed under section 112 – the claimant has claimed far more than he has described and enabled. Whether the claims in Benson and Bilski were actually claiming the invention at the level of abstraction was never actually addressed.

Alice attempted to rescue the situation by saying that a claim having abstract material – whatever it is – can still be patentable if it, as a whole, claims an inventive application. But this again is a matter that is best considered under 112 and really has nothing to do with whether the claimed subject matter is directed to subject matter described in 101.

As a result, there seems to be mass confusion everywhere about why certain claims are declared ineligible under 101: are they declared ineligible because the subject matter is not within the four classes described in 101 or are they ineligible because they are claiming at the level of an idea?

I think the simplest solution to this is to force the Supreme Court to go back to the drawing board and answer the questions presented to them in both Benson and Bilski. So if there is going to be a legislative solution, I would simply declare that Benson, Flook, Bilski and Alice are all overruled, with a suggestion by Congress that a programmed computer is hardly abstract or an idea, nor is a series of steps involving actions by human beings.

In my observation, the MOT is what the Federal Circuit is now applying even though they do not say that they are applying the MOT. If left alone by Congress, the law would developing this direction naturally. But if Congress wanted to make itself very clear on this point, it could add a new section of 100 that a patentable process consists of – the MOT. That “test” is entirely supported in the case law, and it could be implemented without changing section 101 at all.

Anon, the MOT was not disapproved is a test, just as an exclusive test.

The MOT first appeared in Benson, was a basis for the decision in Diehr, and was approved of by the Supreme Court in Bilski – but not as an exclusive test.

If Benson, Flook, Bilski and Alice are all reversed, MOT was still be available. But will not be available its holding claims unpatentable under 101 as directed to ideas or as abstract, or combination of these.

Yes, but you seem to also be saying that someone else has asserted the contrary, and while I am aware of an issue around “mental steps,” I am not aware of a broader “actions by human beings” controversy.